News
May
2009
TABLE
OF CONTENTS
China - Intellectual Property
 Customs
Announces New Implementing Rules for Recorded Intellectual Property
Rights
Updated
Rules for Recognizing Famous Trademarks
New
Administrative Measures for Software Products
China - Foreign Investment
Update
to Rules on Approval of Foreign Invested Enterprises
Taiwan - IP
Internet
Service Provider Liability Limitation Bill to Amend the Copyright
Law
Taiwan Intellectual Property
Office Announces Directory of Well-Known Trademarks
and Case Studies
CHINA
INTELLECTUAL
PROPERTY
General
Administration of Customs Promulgates New Implementing Rules
for Customs Protection of Intellectual Property Rights
On March
3, 2009, the General Administration of Customs ("GAC")
promulgated new Implementing Rules for the Customs Protection
of Intellectual Property Rights ("Implementing Rules").
The new Implementing Rules will take effect on July 1, 2009,
and will replace the old Implementing Rules, promulgated in
2004. There are several major revisions in the new Implementing
Rules:
1. The new
Rules authorize the GAC to directly contact the shipper to request
evidence of its authorization in cases where the GAC finds 1)
the imported and exported goods appear to be protected by IPR
recorded at the GAC, and 2) the recordation does not show any
licensed importer, exporter or manufacturer of the goods.,
2. If the
shipper and consignee of the goods fail to provide proof of
their authorization to distribute the goods, the GAC will have
reason to believe the goods suspected of infringing on recorded
IPRs. GAC is authorized to prevent release of the goods and
to notify the IPR holder in writing.
3. The new Rules add a provision allowing for settlement between
an infringing shipper and an IPR holder. As long as the relevant
parties reach agreement and submit a written application to
the GAC for releasing the detained goods, the GAC can terminate
the investigation. If the GAC considers that the infringement
has constituted a crime, it is authorized to refuse to terminate
a case.
4. The new
Implementing Rules add that the Customs shall solicit the opinions
of relevant owners of IPR in advance of auctioning infringed
goods. It remains to be seen how this provision will be implemented,
and what degree of participation will be afforded to foreign
IPR owners.
State
Administration of Industry and Commerce Promulgates Rules for
Recognizing Famous Trademarks
On April
21, 2009, the State Administration of Industry and Commerce
("SAIC") promulgated the Rules for Recognizing Famous
Trademarks ("Rules"), which came into force that same
day.
The Rules require that the Trademark Office ("TMO")
and the Trademark Review and Adjudication Board ("TRAB")
consider the following factors in order to determine if a mark
is famous: 1) reputation of a mark among the relevant public;
2) use of the trademark over a continuous period of time; 3)
advertisement of the trademark over a continuous period of time,
4) the degree and geographical area of the advertising; 5) any
record of protection of the mark as a famous mark in China or
other countries; and 6) any other factors that relate to the
reputation of the mark worldwide.
The Rules
also require that the Central Disciplinary Committee and the
Ministry of Supervision supervise the recognition work of the
TMO and TRAB, by attending the meetings at which the recognition
of a famous mark is discussed and examined. The supervision
is intended to prevent or reduce opportunities for corruption
to affect the recognition process.
New
Administrative Measures for Software Products
On March
5, 2009, the Ministry of Industry and Information Technology
("MIIT") promulgated the Administrative Measures for
Software Products ("Administrative Measures"), which
came into force on April 10, 2009. The New Administrative Measures
replace the old Administrative Measures promulgated in 2000.
The new
Administrative Measures differ from the old Administrative Measures
in the following ways:
- Upon
receipt of an application to register a software product on
any designated media, the MIIT is required to publish a public
notification to announce the software application. If the
an opposition is not filed within 7 working days from the
issuance of the public notification, the local software industry
authority will approve the software registration application
and issue the software product registration number and registration
certificate.
- Local
software industry authorities are no longer allowed to cancel
software product registrations suspected of violations of
law, bad faith registration, or which fail to satisfy national
technical requirements. Local software industries must now
report these suspected improper software registrations to
the MIIT, and the MIIT should provide any necessary warnings,
publish public notifications, or impose penalties against
improper registrations.
- Various
clauses restricting the production and distribution of unregistered
software products have been deleted in the new Administrative
Measures. This may imply that the MIIT is loosening the supervision
of unregistered software products.
CHINA
FOREIGN
INVESTMENT
Update
to Approval of Foreign-Invested Enterprises
In March 2009, the Ministry of Commerce ("MOC") announced
a Notice on Further Improving the Examination and Approval of
Foreign-Investment Enterprises ("Notice"). Taking
effect immediately, the Notice simplifies the MOC's examination
and approval procedures for foreign-invested enterprise operations.
The Notice will make it easier for foreign investors starting
new entities in China, and implements many changes, including
the following:
- Establishment
of a branch of a foreign-invested enterprise now only requires
recording the establishment of their branch with local commercial
authorities before beginning operations. Previously, a branch
had to undergo examination and approval by the local commercial
authority before they could be set up.
- The MOC
now delegates examination and approval power for large projects
to the provincial commercial authorities and economic and
technological development zones, unless the foreign invested
enterprises operates projects that require substantial state
resources or involve substantial state and economic interests.
Previously, foreign-invested enterprises with a total investment
amount of over US$100 million were subject to the examination
and approval by the MOC for their establishment or modification
of their capital, drafting of company charter and rules.
TAIWAN
INTELLECTUAL
PROPERTY
Internet
Service Provider Liability Limitation Bill to Amend the Copyright
Law
China's
safe harbor law for Internet service providers ("ISP"s)
has been in draft form for some time. On April 21, 2009, the
Legislative Yuan completed the third reading of the draft Internet
Service Provider Liability Limitation Bill ("ISP Bill").
The ISP Bill is now awaiting review by the Presidential Office.
If promulgated by the President, the ISP Bill will implement
the following changes to the existing Copyright Law:
- Upon
discovery of online copyright infringement, copyright owners
may either file legal proceedings directly, or notify the
ISP operating the website with infringing content to remove
the infringing content or information.
- ISPs
must clearly inform users of the ISP's copyright protection
regulations prior to providing service. In addition, ISPs
must inform users that partial or complete termination of
services will be carried out if the user is accused 3 in separate
instances of infringement. ISPs that act according to the
ISP bill will be exempt from civil liability for alleged infringement,
or contractual liability to the alleged infringer. Internet
users found to be infringing on copyrights should find the
infringing content removed by the ISP. If the users do not
submit a rebuttal to a copyright owner's take down notice,
with a request to restore the removed content, the content
should remain off the site.
Directory
of Well-Known Trademarks
On March
17, 2009, the Taiwan Intellectual Property Office ("TIPO")
announced that it had compiled a list of all administrative
decisions, and legal judgments rendered by the civil and criminal
courts where trademarks had been deemed to be well-known within
the last five years. The directory will be available to enforcement
agencies, industries, scholastic institutions, and should help
improve the protection of well-known marks.
Some examples
of well-known trademarks listed in this directory are AEROSMITH
& Design, COORS, MIT, QUARK, and QUARKXPRESS.
©&® 2009 Wang & Wang
|
